Licensor of "Gone In 60 Seconds" Can Pursue Copyright and Trademark Claims for Retained Rights in the Character "Eleanor" the Car

Case: Halicki Films v. Sanderson Sales and Marketing, Carroll Shelby Int'l, 9th Cir. Nos. 06-55806, 06-55807 (11/12/08)

The One Sentence Summary: The licensor of remake rights for the movie "Gone in 60 Seconds" retained sufficient rights in the Eleanor car character to pursue trademark and copyright infringement claims on remand.



Ninth Circuit Holdings:

• The district court erred in interpreting a license agreement concerning the Eleanor car in a remake of the movie "Gone in Sixty Seconds." The license agreement and the extrinsic evidence supported plaintiff's position that she had retained the rights to market both the original and the remake Eleanor cars.
• On remand, the district court should consider whether the character Eleanor was sufficiently developed to qualify for copyright protection.
• Plaintiff potentially had standing to sue for trademark infringement (1) as the owner of the unregistered Eleanor mark and as the owner of merchandising rights in Remake Eleanor.
• With respect to the Gone in 60 Seconds mark, the district court erred in concluding that plaintiff's registered marks in toy cars were insufficient to create standing for an infringement claim regarding actual cars. "To establish standing under the Lanham Act, a plaintiff need only demonstrate that she is the registered owner of a mark for any class of products, even one that does not compete directly with the defendant’s products. See 15 U.S.C. § 1114." Non-competitive goods may still create confusion about the source or sponsorship of goods, and proximity or relatedness of goods is only one of eight factors in the likelihood of confusion analysis.
• Plaintiff had standing to seek cancellation of the "Eleanor" mark because she retained merchandising rights to Remake Eleanor and use of the mark "Eleanor" could create confusion.
• Plaintiff waived her challenge to summary judgment on her state law claims by inadequately briefing them in her appeal.
• The district court did not err in refusing to award attorneys' fees under 17 U.S.C. § 505 of the Copyright Act or 15 U.SC. § 1117(a) of the Lanham Act.
  

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First Amendment Barred Trademark Claims On Depiction of Strip Club in Video Game

Case: E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., 9th Cir. No. 06-56237 (11/5/08)

The One Sentence Summary: The First Amendment barred trademark infringement claims regarding a fictionalized "Pig Pen" strip club in the game "Grand Theft Auto."


What They Were Fighting About: ESS, the operator of the Play Pen strip club, sued Rock Star games for trademark infringement and state law claims for Rock Star's depiction of a fictionalized "Pig Pen" strip club in the Grand Theft Auto video game. The district court granted summary judgment for defendants.

Ninth Circuit Holdings:

• Trade dress claim arising from similarity of trademarks was disposed of with the same analysis as trademark claim.
• Nominative fair use defense did not apply where the video game "Pig Pen" mark was not referring or commenting on "Play Pen" mark.
  
• The panel applied the Second Circuit’s approach from Rogers v. Grimaldi, which

  “requires courts to construe the Lanham Act ‘to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression.’ ” Walking Mountain, 353 F.3d at 807 (emphasis in original) (quoting Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir. 1989)). The specific test contains two prongs. An artistic work’s use of a trademark that otherwise would violate the Lanham Act is not actionable “ ‘unless the [use of the mark] has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless [it] explicitly misleads as to the source or the content of the work.’ ” Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 902 (9th Cir. 2002) (quoting Rogers, 875 F.2d at 999).

  
  
• The depiction of the Play Pen club in the video game had some artistic relevance.
• The use of the Play Pen club in the video game did not explicitly mislead players of the game.
  
• The trial court properly granted summary judgment for defendants.
  

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Copyright Fair Use Symposium at USF

Fair Use in the Sky with Diamonds: Examining the Derivative Works Right in the Face of Fair Use, a symposium at the University of San Francisco, explored difficult and interesting questions about copyright fair use.


Highlights included:

• Corynne McSherry of the Electronic Frontier Foundation and Jason Schultz of the Samuelson Law, Technology & Public Policy Clinic at Berkeley Law School spoke about fair use cases including the Lenz v. Universal case (the video of a toddler dancing to a Prince song that drew a DMCA takedown notice). This case generated a decision under 17 U.S.C. sec. 512 that sending a takedown notice requires the copyright holder to consider the question of whether the posting is fair use.
• Annette Hurst talked about defending the "artsurdist" who created parodies of Barbie and fifties kitchen appliances in the Mattel v. Walking Mountain case.
• Jim Marshall, a famous photographer known for his photographs of rock stars, voiced his perspective that "fair use" is often used to justify unfair rip-offs of his work. He spoke about his famous photograph of Johnny Cash flipping the bird. (Search for it on the Internet - the photograph is everywhere).
• Steve Vander Ark, the author of the Harry Potter Lexicon, discussed his creation of the Lexicon as a librarian's aid to finding details in the Harry Potter books. He described how writing the Lexicon was not about the money, but rather his love of the stories and the experiences like finding a headstone for James and Lilly Potter. In another panel, attorneys involved in the case discussed the trial and the principles involved.
• Another panel with Paul Edward Geller and Ysolde Gendreau explored international copyright and moral rights.
  

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